Articles

Amendments to the Implementing Regulations of the Trademarks Law

Authors: Florina Firaru, Dariana Istrate, Luciana Anghel

The long – awaited publication of the amendments to the Government Decision No. 1134/2010 on the approval of the Implementing Regulations of Law 84/1998 on Trademarks and Geographical Indications, republished, (the “Trademarks Regulation”) brought by the Government Decision no. 1197/2022, took place on 7 October 2022, when the amendments also entered into force.

Following the above, the most important changes and clarifications on the proceedings, as provided for in the Trademarks Regulation, focus on:

1. Definitions updates

 To align terminological notions changed and updated in the intellectual property area and to reflect the evolution of technology, facsimile was replaced with “electronic means” or “email”, “OHIM” was changed to “EUIPO”, and definitions of the terms “opponent” and “appellant” were introduced in the Trademarks Regulation.

2.  Clarifications on the power of attorney

The appointment of an authorized representative before the State Office for Inventions and Trademarks (“OSIM”) is to be made by a power of attorney (the “PoA”). In addition to the name and the signature of the applicant, of the right holder or of the interested person, as the case may be, it is also necessary to indicate the extent of the representation power, the date when such power was granted and the duration.

The 30-day term for filing the PoA was extended to 2 months as from the receipt of the notification issued by OSIM and, as an additional novelty, the Trademarks Regulation clarifies that in the case of the failure to submit the PoA within the above-mentioned term, the procedure will continue with the applicant or the right holder. Also, procedural acts drafted in the absence of the PoA will be deemed as not having been prepared.

3.  Trademark applications – filing & procedure

In terms of trademark applications – filing & procedure, the updates to the Trademark Regulation:

• specify that the trademark filing shall be made using the standard form available on the official website of OSIM (osim.ro);
• provide for new requirements and guidance for representation of figurative, tridimensional, movement, color, sound, multimedia etc. trademarks, as the requirement for the trademark to be represented graphically was removed. Essentially, the signs may be represented in any suitable form using generally available technology, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective;
• establish an important procedural step, for trademarks that might be refused based on absolute grounds, such as for lacking distinctive character, or becoming customary in the current language or in the trade, or consisting of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, etc. or other characteristics of the goods or service, as in the filing process the applicant may file a declaration on the acquired distinctiveness, through use, of such trademark, providing evidence in support of such declaration;
• add new elements to the formal examination process – OSIM establishes a 7-day period for the formal examination of the application, followed by a 10-day period for the communication of the notification on granting the application date;
• implement the procedure whereby OSIM starts informing applicants of the observations filed by interested parties on absolute grounds, where this procedure was not mandatory before; in response, the applicant may present comments during the substantive examination procedure;

4.  Opposition

In accordance with the provisions of the Law no. 84/1998 on trademarks and geographical indications, republished, any interested parties may oppose the registration of the trademark for relative grounds, within a 2-month period from the publication of the decision for registration of the trademark. The Trademarks Regulation includes procedural clarifications and additional details, such as:

• an important amendment to the proceedings is that OSIM starts communicating the response of the applicant to the opponent; in reply, the opponent may file a response within 30 days;
• the requirements for proving the well–known status of the trademark were extended to trademarks with reputation;
• we can note that in cases of suspension of the opposition OSIM is given more control, as it is specifically provided that it can request the parties to submit information or documents serving as proof that the ground for suspension subsists;
• overall, more clarifying provisions were implemented and aligned with the provisions of the amended Law no. 84/1998 on trademarks and geographical indications (e.g. the terms for the cooling–off period, scope of proof of use if requested and the eligible trademarks, suspension of opposition etc.).

5. Other proceedings concerning trademarks

The changes which are listed below confirm the recent practice of OSIM, especially as a result of the challenging pandemic period, on the acceptance of supporting documents in copy, and not necessarily originals or notarized copies, as it was the case under the previous regulation. Accordingly

• Recordation of changes in the owner of the trademark, of licenses and of other rights (pledges, seizures) – for recording the transfer and / or the change(s) in the owner, for instance as a result of an assignment, merger, succession, court decision or any other transfer of rights provided by the law, or of a license or seizure, a simple copy of the corresponding agreement or of an extract therefrom, each of them in the form of a certified true copy, will suffice (our note –  the requirement to submit supporting documents in original or legalized copy is eliminated).
• Certified true copies of supporting documents will also be sufficient for recording other changes in the trademark, such as changes in the name and / or address of the owner or its authorized representative, including for recording mentions that the trademark owner is going through an insolvency process.

6.  Modifications regarding deadlines

Overall, more specific or extended or shorter deadlines, as the case may be, for complying with requirements or remedying irregularities, as for example:

• Renewal request – for remedying irregularities in the renewal request, the 3 months period was reduced to 30 days;
• recording of changes in the trademark (owner, name, address, etc.);
  • for remedying irregularities in the recordation request, the 3-month period was reduced to 2 months;
  • it is specifically provided for that the change is to be published by OSIM in the Official Bulletin within 30 days as from receipt of the request (note – no such deadline was provided for before, this will definitely speed up the recordation process, which used to take up to several months).
• Proof of use of the earlier trademarks if requested within opposition proceedings must be filed within 2 months as opposed to 30 days, as it was the case previously.

As a general note, if electronic communication details are indicated for contact purposes, such means will take priority when OSIM is sending notifications or other communications to the applicant, right holder or any other interested party. In such a case, in the absence of an express receipt confirmation from the recipient, OSIM will consider as the communication date the first working day following the date when the correspondence was sent, by electronic means.

This article outlines the amendments made to the Trademarks Regulation, which were published in the Official Gazette of Romania no. 976 of October 7/2022. The Trademarks Regulation transposes the provisions of the EU Directive 2015/2436 of the European Parliament to approximate the laws of the Member States relating to trademarks as far as concerns the definitions, collective trademarks, opposition procedure, recordal of changes, or renewals.

For questions or any advice, do not hesitate to contact our Intellectual Property Department: Florina Firaru (Managing Associate) – florina.firaru@nndkp.ro, Dariana Istrate (Senior Associate) – dariana.istrate@nndkp.ro and Luciana Anghel (Associate) – luciana.anghel@nndkp.ro.